Globalaw Ltd. v. Carmon & Carmon Law Office, CIV A 03-950 CKK.

Citation452 F.Supp.2d 1
Decision Date11 September 2006
Docket NumberNo. CIV A 03-950 CKK.,CIV A 03-950 CKK.
CourtUnited States District Courts. United States District Court (Columbia)
PartiesGLOBALAW LIMITED, Plaintiff, v. CARMON & CARMON LAW OFFICE and Globalaw, Inc., Defendants and Counterclaim Plaintiffs, v. Globalaw Limited, Ballard Spahr Andrews & Ingersoll, LLP, Jackson Walker L.L.P., and Garvey Schubert Barer, Counterclaim Defendants.

Constantinos G. Panagopoulos, Charles Wheeler Chotvacs, Ballard, Spahr, Andrews & Ingersoll, LLP, Washington, DC, Roberta Jacobs-Meadway, Philadelphia, PA, for Plaintiff.

John C. Lowe, John C. Lowe P.C., Bethesda, MD, for Defendants and Counterclaim Plaintiffs.

Benjamin J. Lambiotte, Garvey Schubert Barer, Constantinos G. Panagopoulos, Charles Wheeler Chotvacs, Ballard, Spahr, Andrews & Ingersoll, LLP, Marina K. Bowsher, Ballard, Spahr, Andrews & Ingersoll, LLP, Roger P. Furey, Katten, Muchin, Zavis, Washington, DC, David Lieberworth, Adam Frederick Hulbig, Brian II. Corcoran, Seattle, WA, Cami Dawson

Boyd, Carl C. Butzer, Robert P. Latham, Jackson Walker L.L.P., Dallas, TX, Roberta Jacobs-Meadway, Philadelphia, PA, for Counterclaim Defendants.

MEMORANDUM OPINION

KOLLAR-KOTELLY, District Judge.

Plaintiff GLOBALAW Limited, a corporation organized under the laws of the country of Jersey and established as a international networking tool for over seventy (70) law firms across the globe, brought this action against Defendants Carmon & Carmon Law Office and GLOBALAW, Inc. (hereinafter, collectively "C & C"), on April 29, 2003, seeking a declaratory judgment that (1) it was the rightful "owner of United States trademark rights in the GLOBALAW service mark in connection with association services, namely promoting the interests of a group of law firms providing legal services on an international basis," Compl. ¶ 19; and (2) that "its use and its licensees' use in the United States of the GLOBALAW mark does not constitute infringement of any rights C & C might have in the GLOBALAW mark in the United States," id. ¶ 20.

On January 13, 2004, C & C filed its Answer and Counterclaim, which has become the focus of this suit. C & C's Counterclaim named, as Counterclaim Defendants, GLOBALAW Limited (the original Plaintiff), and, inter alia, three law firms participating in the GLOBALAW Limited network: Ballard Spahr Andrews & Ingersoll, LLP ("BSAI"), Jackson Walker L.L.P. ("JW"), and Garvey Schubert Barer ("GSB") (hereinafter, collectively, "Counterclaim Defendants" or "the Law Firms").1 C & C's Counterclaim asserts that it is the rightful owner of the GLOBALAW service mark, and alleges that C & C has used the mark in conjunction with its law and business practice in New York City, New York, since on or about 1988. See C & C's Counterclaim ¶ 38. C & C's Counterclaim seeks—among other things—a permanent injunction, treble damages, the profits of Counterclaim Defendants, and a declaration that C & C is the rightful owner of the mark based upon four separate alleged violations: (1) trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), see id. ¶¶ 54-57 (Count I); (2) trademark infringement, false designation of origin, passing off, and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), see id. ¶¶ 58-61 (Count II); (3) false and misleading statements of fact under Section 43(a)(1)(B) of the Lanham Act, 15 U.S.C. 1125(a)(1)(B), see id. ¶¶ 59-65 (Count III); and (4) common law trademark infringement, unfair competition, and misappropriation, see id. ¶¶ 66-69 (Count IV).

Following a round of extended, highly acrimonious discovery in this case, the closure of which remains highly contested by C & C, Counterclaim Defendants BSAI and JW brought a Motion for Summary Judgment against C & C, asserting that dismissal of all four counts contained within C & C's counterclaim was warranted.2 Three other motions have been filed which relate to or impact the Counterclaim Defendants' Motion for Summary Judgment: (1) C & C's Motion to Reconsider the November 14, 2005 Opinion and Order of Magistrate' Judge Alan Kay, which resolved numerous discovery-related motions; (2) C & C's Motion for Further Discovery Pursuant to Federal Rule of Civil Procedure 56(f), which was filed contemporaneously with its Opposition to the Counterclaim Defendants' Motion for Summary Judgment; and (3) Counterclaim Defendants' Objections and Motion to Strike Evidence Submitted in Support of C & C's Response to Counterclaim Defendants' Motion for Summary Judgment. Each motion has now been fully briefed, and is ripe for this Court's resolution.

Upon a searching examination of the parties' filings, the attached exhibits, the relevant case law, and the entire record herein, the Court shall (1) grant Counterclaim Defendants' Motion for Summary Judgment as to all counts contained within C & C's Counterclaim; (2) deny C & C's Motion for Further Discovery Pursuant to Federal Rule of Civil Procedure 56(f); (3) deny C & C's Motion to Reconsider the November 14, 2005 Opinion and Order of Magistrate Judge Alan Kay; and (4) deny without prejudice as moot Counterclaim Defendants' Objections and Motion to Strike Evidence Submitted in Support of C & C's Response to Counterclaim Defendants' Motion for Summary Judgment.

I: BACKGROUND

A. The Parties

In order to get a better understanding of the contours of this complex suit, it is necessary to set out—in rather extensive detail—the background of the relevant parties in this action. The Court shall begin by looking at Counterclaim Plaintiff C & C, and then shall turn to a discussion of Counterclaim Defendants/the Law Firms BSAI, JW, and GSB. The Court shall then set out the apparent overlap between the practice of C & C on one hand, and the practices of Counterclaim Defendants BSAI, JW, and GSB on the other hand. Following this discussion, in the next subsection, the Court shall discuss the competing GLOBALAW's established by these opposing parties.3

1. Counterclaim Plaintiff—Carmon & Cannon Law Office

Defendant and Counterclaim Plaintiff Carmon & Carmon Law Office is a New York partnership formed in 1987, and its current address is 767 Third Avenue, New York, N.Y. 10017. See HC at 14-15.4 C & C consists of two individual partners— Haggai and Rakeffet Carmon. Id. at 21. From time to time, C & C has employed various legal secretaries and assistants, see RC at 36; HC at 500, but Haggai and Rakeffet Carmon have always been the only attorneys employed by C & C, see HC at 21, which has never had any other attorneys associated with it, other than on a periodic office sharing basis, see HC at 22-25, 62-68. As Ms. Rakeffet Carmon has attested to, C & C is small and of limited means. See TTAB at 63. Since its formation in 1987, all of C & C's office locations and business headquarters have been located within the New York City area. See HC at 15-17. Neither of the Carmons is rated by Martindale-Hubbell. See HC at 169; Countercl. Defs.' Mot. for Summ. J Ex. 9 (Decl. of Charles W. Chotvacs, counsel for BSAI) ¶ 9.

The Carmons are both Israeli nationals, see RC at 99; HC at 261-62, and are licensed to practice law in Israel, see HC at 70; RC at 6-8, 22-23, 100. Ms. Rakeffet Carmon graduated from Tel Aviv Law School in 1981 and thereafter worked for a number of years as the equivalent of a criminal prosecutor/assistant U.S. district attorney before moving to the United States in 1985 with her husband, Haggai, to start their business. See RC at 18-19, 100-01; HC at 264-65. Following their move to the United States, both Haggai and Rakeffet Carmon became US. citizens in 1995. See 11/28/05 Haggai Cannon Aff. ¶ 3.

Ms. Carmon's legal practice in the United States focuses almost entirely in the area of immigration, see RC at 13-16; HC at 523-24, and her clients are mostly Israeli nationals, see RC at 121. In 2004, Ms. Carmon had only "a few dozen" "active cases," and testified that she has more clients than she "can handle." RC at 15-16, 36.5 Rakeffet Carmon is licensed to practice in the State of New York, but her work in states outside of New York appears to be quite limited; for instance, Ms. Carmon remembers doing some "legal work" in Texas but has never appeared in a Texas courtroom before a judge and jury, and has never been admitted pro hac vice in Texas. See id. at 87. Furthermore, she has taken one deposition in her entire career, in New York in 1988. See id. at 88.

Mr. Haggai Carmon received his license to practice law in Israel in 1981, see HC at 70, where he worked as an attorney for two years before moving to the United States, id. at 262-64. Despite multiple attempts, Mr. Carmon has not passed any U.S. bar exam; however, given that he has passed the Ethics Bar Examination and the New York Character and Fitness Committee's interview, Mr. Cannon has been allowed to act as a "legal consultant" in New York (pursuant to its state statute recognizing foreign attorneys) under certain limited circumstances, where he provides advice on Israeli law within the State of New York. See HC 57, 70-71; RC at 24-25; see also 5/20/05 Rakeffet Carmon Aff. ¶ 2. He testified that he is also licensed to practice law on "some other additional areas that [he] could advise clients pursuant to what the law says." However, when asked about what those areas were at his deposition, he responded, "I don't know, I don't remember. The last time I looked it was many years ago. I don't actually do it. I am sure you can find the law." HC at 70-71; see also 22 NYCRR § 521.3 (setting out the limitations on licensed legal consultants within the State of New York). Haggai Carmon testified that his law practice in the United States is limited to two areas: (a) Israeli legal matters, and (b) other legal matters outside the United States for certain departments of the United States government, including the Division of Foreign Litigation of the United States Department of Justice. Id. at 73-76. Mr. Carmon testified that...

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